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Passing off - Asian Business Publications Ltd v British Asian Achievers Awards Ltd and Another

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Jane Lambert

Intellectual Property Enterprise Court (Recorder Amanda Michaels) Asian Business Publications Ltd v British Asian Achievers Awards Ltd and Another [2019] EWHC 1094 (IPEC) (2 May 2019)

This was an action for passing off.  The claimant ran an event called the Asian Achievers Awards. The defendants ran a similar event called the British Asian Achievers Awards. These were both charity dinners held in top class West End hotels at which prominent individuals of subcontinental heritage were presented with certificates.

The Issues
The following issues were identified at the case management conference:

"1) Whether the Claimant has acquired goodwill in the UK associated with the name or mark Asian Achievers Awards.
2) Whether the Defendants have (by using and/or threatening to use, the name or mark British Asian Achievers Awards) misrepresented that their competing events and/or any goods or services associated therewith is or are those of the Claimant or are connected or assoc…

Copyright - FBT Productions, LLC v Let Them Eat Vinyl Distribution Ltd and Another

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Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon)FBT Productions, LLC v Let Them Eat Vinyl Distribution Ltd and another [2019] EWHC 829 (IPEC)

This was a claim for infringement of copyright in the sound recording of an album called Infinite by Marshall Bruce Mathers III who is better known as Eminem. The claimant, a Detroit record company, alleged that the first defendant had made vinyl copies of Infinite which it supplied to the second defendant for resale to the public. Neither defendant denied those acts but they challenged the claimant's claim to copyright and the second defendant denied that it knew or had reason to believe that the items that it sold were infringing copies.

The Issues
The action came on for trial before His Honour Judge Hacon.  At paragraph [5] of his judgment, he identified three issues in dispute:
(1) Whether the claimant owned the copyright.
(2) Whether the defendants were licensed under the copyright.
(3) If there was no licence, whether…

Patent Entitlement - BDI Holding GmbH v Argent Energy Ltd. and Another

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Jane Lambert

Intellectual Property Enterprise Court (Judge Hacon) BDI Holding GmbH v Argent Energy Ltd. and another [2019] EWHC 765 (IPEC) (27 March 2019)

This was an action by BDI Holding GmbH ("BDI") for a declaration that it was entitled to a European patent for the following invention:

"There is described a biodiesel composition and process for producing biodiesel and related products. There is also described related fuels and fuel blends comprising biodiesel. The biodiesel composition is prepared from a mixture comprising fats, oils and greases from sewer waste. The composition comprises a mixture of esters of which 7-10.5 weight % is methyl octadecanoate (stearate). Specified percentages of other methyl esters are also claimed, including methyl tetradecanoate (myristate), methyl hexadecanoate (palmitate), methyl cis-9-octadecenoate (oleate) and others."

An application for a patent for that invention had been filed under application, number EP3011041 (A1) by Arg…

Trade Marks: APT Training and Consultancy Ltd. and another v Birmingham & Solihull Mental Health NHS Trust

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Jane Lambert

Intellectual Property Enterprise Court (Her Honour Judge Melissa Clarke) APT Training and Consultancy Ltd and another v Birmingham & Solihull Mental Health NHS Trust[2019] EWHC 19 (IPEC) 9 Jan 2019

This was a very interesting case for two reasons.  First, the claim was for the infringement of the claimant's British and European Union trade marks for educational services, training, seminars and the like relating to psychology by providing mental health care in its hospitals and training in its use under an acronym that was the same as those registered marks. Secondly, the trial of the action took place outside London the first time in the history of the Intellectual Property Enterprise Court ("IPEC").

The Parties
The claimants were APT Training & Consultancy Ltd. and its founder, Dr William Davies.  Dr Davies had developed a training course for tackling challenging behaviour at source as explained by the YouTube video Challenging Behaviour Training | RA…

Trade Marks and Passing off - Nomination Di Antonio E Paolo Gensini SNC v Brealey and Another

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Jane Lambert

Intellectual Property Enterprise Court (Judge Hacon) Nomination Di Antonio E Paolo Gensini SNC and another v Brealey and another (t/a JSC Jewellery) [2019] EWHC 599 (13 March 2019)

This was an action for trade mark infringement and passing off.
The Claimants The first claimants are an Italian partnership dealing in charm bracelets.   The second is an Italian company that markets those bracelets.  The judge referred to the claimants collectively as "Nomination."   The second claimant advertises the bracelets in the UK on its website at www.nomination.com. Judge Hacon, who tried the action, called one of those products as a "composable bracelet" at paragraph [7] of his judgment. and described it as follows:

"It consists of individual links, measuring about 10 x 9mm, which may be detached from each other and relinked in any order to the taste of the wearer. These include what were called 'base links', which are made of stainless steel and bear …

The Cialis Dosing Appeal - Actavis Group PTC EHF and Others v ICOS Corporation and another

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Jane Lambert

Supreme Court (Lady Hale, Lords Kerr, Sumption, Hodge and Briggs) Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15 (27 March 2019)

In The Cialis Litigation - Actavis Group PTC EHF and Others v Icos Corp and Another 4 Oct 2016, I discussed Mr Justice Birss's judgment in Actavis and others v Eli Lilly and Co [2016] EWHC 1955 (Pat) (10 Aug 2016) in which he dismissed a claim for the revocation of European patent (UK) No 1,173,181  "Compositions comprising phosphodiesterase inhibitors for the treatment of sexual dysfunction" and held that the patent had been infringed,  His judgment was reversed by the Court of Appeal (Lord Justices Lewison, Kitchin and Floyd) in  Actavis Group PTC EHF and another v Teva UK Ltd and others  [2017] EWCA Civ 1671, 159 BMLR 108, (2018) 159 BMLR 108, [2018] RPC 7 (1 Nov 2017) on the ground that the claims relied upon had been obvious.  The patentee and its exclusive licensee in the UK appealed to the Sup…